On April 15, 2014, ALJ E. James Gildea issued Order No. 77 in Certain Consumer Electronics With Display and Processing Capabilities (Inv. No. 337-TA-884).  In the Order, ALJ Gildea denied Respondents Toshiba Corp., Toshiba America, Inc., Toshiba American Information Systems, Inc., and Vizio, Inc.’s (collectively, “Respondents”) motion for summary determination that certain claims of U.S. Patent No. 8,144,158 (the ‘158 patent) are invalid for lack of written description.

Respondents argued that the claim terms “scan converter” and “scan convert data” in the ‘158 patent needed to be construed in accordance with how similar terms had been construed in the related U.S. Patent No. 6,650,327 (the ‘327 patent).  Respondents noted that the U.S. Court of Appeals for the Federal Circuit had previously construed the ‘327 terms to require that the claimed scan converter perform operations entirely in floating point.  Respondents therefore argued that the ‘158 claims also required that operations be performed entirely in floating point.  However, Respondents argued that if the ALJ were to construe the terms as not having this requirement, then the ‘158 patent lacks written description support for claims that include these terms because the specification allegedly does not provide support for a scan converter that does not operate entirely in floating point.

Complainant Graphics Properties Holding Inc. (“GPH”) opposed the motion.  GPH contested Respondents’ proposed constructions and argued that there were disputed issues of material fact that precluded summary determination.  The Commission Investigative Staff also opposed the motion.

After considering the arguments, ALJ Gildea determined to deny the motion.  The ALJ noted that he had previously ruled in his Markman order that the “scan converter” and “scan convert data” terms in the ‘158 patent were not limited to performing operations entirely in floating point.  See our March 13, 2014 post for more details on the Markman order.  Moreover, there were at least material questions of fact as to whether a person of ordinary skill in the art would have understood the ‘158 patent specification to disclose non-floating point operations, and thus provide written description support for the claims as construed.  Accordingly, ALJ Gildea denied Respondents’ motion for summary determination.